Appeal No. 95-1256
Application No. 08/043,917
In considering this issue, we note that appellants are
not required to disclose every parameter encompassed by the
claims. See In re Angstadt, 537 F.2d 498, 190 USPQ 214
(CCPA 1976). However, there must be sufficient disclosure,
either through illustrative examples or terminology to teach
those of ordinary skill in the art how to make and use the
invention as broadly as it is claimed. See In re Vaeck, 947
F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). It is the
examiner’s burden to show that one skilled in the art would
have to resort to undue experimentation in order to practice
the invention as broadly claimed. Here, speculation, rather
than a persuasive legal or technical reason, has been given
as to why the specification does not reasonably enable one
skilled in the art to practice the invention as broadly as
it is claimed and without undue experimentation. See In re
Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971).
The specification gives 5 Examples (pages 8-11)
describing in detail starting materials, reactors, reaction
temperatures and pressures, and accompanying cooling,
warming and evacuating steps. The reaction conditions,
including preferred temperatures, mole ratios for the
starting materials, and the hydrogen, are clearly described
in the specification (pp. 6-7). Furthermore, the
hydrogenolysis technology of the examples and specification
4
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